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Introduction:
A Geographical Indication (GI) is an intellectual property right that protects the indication of a product as originating from territory, or some locality in that territory, and that products have acquired reputation and distinctiveness attributable to its geographical origin. The preamble of Geographical Indication of Goods (Registration and Protection) Act, 1999 provides the registration and better protection of geographical indications relating to goods in order to protect these products on Regional National and International level. This helps in boosting local industry, preserving the traditional cultural heritage and discourages misuse or imitations of a GI tagged product.
Generally, conflicts in GI arises when two countries claim ownership over the same products, usually due to geography, history, or customs. Disputes of this nature can lead to litigation and disruptions in commerce. Sometime it can lead to bombardment of fake products in the markets also due to lack of any authorised nations. The Basmati rice GI dispute between India and Pakistan, or the "Scotch Whiskey" conflict between Skotland and other countries, exemplifies difficulties in market entry, cultural nationalistic sentiments, and economic interests. In many of those conflicts, over PISCO alcoholic beverages, similar dispute between Chile and Peru arose in India.
Asociacion De Productores De Pisco A.G Vs. Union of India & Ors, 2025; Delhi High Court
Facts: The Embassy of Peru, 'hereinafter Defendant' filed application for registration of GI "PISCO" in class 33 related to alcoholic beverages. The association of producers of the Alcoholic beverage Chilean PISCO in III and IV regions of Chile, 'hereinafter Petitioner' filed notice of opposition against the same. The registrar of trademark and GI allowed the respondent's application of registration with name "Peruvian PISCO" to avoid any deception or confusion. Whereas, respondent filed an appeal against that impugned award before Intellectual Property Appellate Board (hereinafter 'IPAB'). IPAB held the decision in favour of respondent allowing them to registration by "PISCO" without the prefix 'Peruvian'.
Against the decision of IPAB, petitioner filed the writ petition challenging the same claiming that removing prefix from PISCO will cause deception and confusion among the common public. Petitioner claims an equal right over the GI PISCO whereas the respondent claims of an exclusive rights over the same.
Arguments on behalf of petitioner:
Petitioner claimed that their association are producing the Chilean PISCO continuously from a century. The Geographical link between the Chilean and Peru has already been recognised by the many international free trade agreements between Chile and other countries. It was also emphasised that the Embassy of Peru does not have Locus Standi to file application under GI act as section 11 does not recognise a State or Nation as an applicant. Petitioner emphasises that both nations produce grape wine in same way, locally named as 'Puchuchu' and 'Piscos' which gave the birth to word 'PISCO'. It is admitted facts that both nations produce different products hence the present case is of 'Homonymous GIs'. In that case, adding prefixes is necessary to avoid confusion. Also, Article 22.4 of the TRIPS provides that GIs of two countries can have co-existence with each other.
Arguments on behalf of Respondent:
Respondent claims that there is no region called 'PISCO' in Chile. Also, there is not any geographical boundary between the production region of PISCO Alcoholic beverages between both nations. As the products being made in southern part of Peru, whereas the production region lies in huge desert of Atacama Desert in Chile. Therefore, the climatic and other geographical conditions of both nations are not similar in nature with respect to the production region. It is also claimed that on the one side the petitioner claims that the products and productions process are different, then how come petitioner can claim of Homonymous GIs.
Analysis:
Mini Pushkarna, J. discussed the preamble of the GI Act emphasising its objective to protect and promote goods associated with geographies along with it, to prevent the confusion or deception to the consumer in relation to the goods. Hon'ble court distinctively clarified the difference among the trademarks and GI that as the Trademark is private right, GI is collective rights. Trademarks can be assigned or transferred but GIs cannot. Priority of adoption and use of marks are relevant in trademarks but priority does not play much role in registration of GIs.
Hon'ble court noted that the issue in present case is whether the Chilean Liquor be referred in the impugned order of the IPAB is identified as 'PISCO'. It was also observed that there was recognition and use during prolonged time period for PISCO in Chile. It is established beyond doubt that the alcoholic beverage from Chile is recognized. Section 9(a) prohibits the registration of those GIs which can cause confusion or likely to cause confusion. There is no reference to the goodwill or misrepresentation in the GI act. It is also evident that chile is also identified as PISCO considering the various documents placed. Hence, findings saying that Chile has misappropriated the GI PISCO is erroneous and irrelevant here.
Hon'ble court took note that petitioner never claimed that the production regions are common or adjacent. They always pleaded for shared claim over the PISCO GIs or share history over the production of PISCO liquor. And on that basis petitioner claimed to declare it as Homonymous GIs. Explaining 'Homonymous GIs', it was clarified that Homonymous GIs bring the claim of multiple GIs with co-existent status along with addition of prefixes/indicators to reduce the confusion among the consumers.
Section 10 of the GI act, provides for the registration of homonymous GIs providing that considering the practical conditions with need of equitable treatment of the producers of goods and those homonymous indications have to differentiated from other indication reducing the chances of confusion among consumers. By proving supporting documents such as Free trade agreements with different nations recognising the Chile PISCO, it is evident that this is a case of Homonymous GIs. It was also held that while Peruvian application is protected in Lisbon countries under the Lisbon agreement, it cannot prevent the use of the Chilean PISCO.
Regarding petitioner's arguments on questioning the locus standi of respondent, hon'ble court held that section 11 permits an association of person or authority established under law to file an application for registration of a GIs.
Hon'ble court also provided the example of homonymous registration of Bangla Rasogolla and Odisha Rasagolla in reference to the same. As Bengal Rasogolla invented in 19th century, whereas Rasgola was historically and culturally associated with Shri Jagannatha Temple, Puri since 12th Century. Like with the same facts, alcoholic beverage from Peru and Chile were both recognised and identified as PISCO considering the facts that the products are completely different. Hence, it is necessary to add prefixes before them to identify both products separately.
Decision:
Hon'ble court held that the documents and records have clearly established that the alcoholic beverage from Chile is recognised as PISCO. If the respondent's GI will be registered without adding prefix 'Peruvian', deception and confusion is bound to occur. Hence the registration will be against the section 9(1) and 9(g) of GI act.
Importance of the judgement:
Currently, there are various producers/nations claiming same GIs due to various legal or illegal reason. But these disputes create various challenge and pose threat to genuine products. Counterfeit or lower quality products enters the markets during ongoing disputes. It creates authenticity problem or reduces quality perception among the users of those products. Also, these trade tensions among both nations can cause disruptions in commercial flows also. Market fragmentation, reduced global access and consumer confusion are another issues arose in situation of disputed over the same. So solving the problems by granting Homonymous status to both the GIs are very relevant way forward, which should be promoted too.
Also, the hon'ble Delhi High Court followed recommendation passed in 1999, the General Assembly of the OIV adopted Resolution ECO/3/99 when dealing with homonymous geographical indications. One of the recommendations was the encouragement mentioning sufficient distinguishing information to avoid confusion of consumers.
Conclusion:
Homonymous geographical indications (GIs) can offer a workable compromise when the same name genuinely belongs to different regions, provided that consumer protection and fair competition are carefully safeguarded. The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) in its fifth session Geneva, September 11 to 15, 2000, noted that honest concurrent use is acceptable when each GI truthfully identifies the origin of its products.
Endnotes:
https://delhihighcourt.nic.in/app/showFileJudgment/59207072025WO172021_202727.pdf
https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ%3AL%3A2009%3A028%3A0003%3A0087%3Aen%3APDF
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